BARRY W. ASHE, District Judge.
Before the Court are three motions for partial summary judgment filed by defendant Benton Energy Service Company d/b/a Besco Tubular ("Besco"),
This action is one among three consolidated lawsuits over rights to an elevator roller insert system ("ERIS"), a technology used in drilling for oil. On January 20, 2017, Cajun filed suit against Besco ("Cajun I Lawsuit"), alleging violation of the Defend Trade Secrets Act ("DTSA"), 18 U.S.C. §§ 1831, et seq.; violation of the Louisiana Uniform Trade Secrets Act ("LUTSA"), La. R.S. 51:1431, et seq.; violation of the Louisiana Unfair Trade Practices and Consumer Protection Law ("LUTPA"), La. R.S. 51:1401, et seq.; bad faith breach of contract; fraud; and civil conspiracy.
On June 4, 2018, the day before Cajun's ERIS patent issued (Patent No. 9,988,862, "the '862 Patent"), Besco filed suit against Cajun ("Besco Lawsuit"), seeking a declaration that Cajun's patent was invalid, unenforceable, and/or not infringed by Besco.
At issue here are the claims brought by Plaintiffs in the Cajun II Lawsuit. In Plaintiffs' first amended complaint, Cajun asserts that Besco infringed Cajun's '862 Patent, which is directed to the invention of ERIS.
Difficulties can be encountered with maintaining proper thread integrity of the connections while making up the segment or stand to the string of tubulars because the threads of both connections may be damaged if the threads of the two connecting tubulars are not properly aligned when the rotation with power tongs begins. Additionally, the ability to run segments or stands of weighty tubing can be hindered by the fact that the internally threaded sleeve of a segment generally rests on the top of the elevator, resulting in friction between the face of the sleeve and the shoulder of the elevator while the tubulars are threaded together. This can cause the sleeve to back-off or become disconnected from the tubing, possibly allowing the tubing segment or stand to fall to the rig floor. Further, in the event of the use of a swivel to rotate the entire elevator, there is a risk that the swivel or the cable holding the swivel could become worn or fatigued to the point of failure, resulting in the elevator and the tubing falling to the rig floor.
Because these issues posed serious cost and safety concerns, there was a need in the industry for a device that would allow tubulars to rotate freely within a closed elevator while supporting the weight of the tubular.
Following a claim construction hearing, the Court construed the '862 Patent's disputed terms as follows: the phrase "configured to" means "set up for operation especially in a particular way"; the term "contact" means "contact between the rollers and the tubular as would allow free rotation"; and the term "contacts" means "to place, bring, or come into contact as would allow free rotation."
Besco is an oilfield service company specializing in oilfield pipe running services that utilizes specialized tubular handling equipment operated by Besco's personnel. Besco developed a system for compensating or offsetting suspended tubular goods during pipe installation and removal called the Bail Assisted Tubular Thread System, or "BATT System," which Besco patented (U.S. Patent No. 9,816,333, "the '333 Patent").
In an attempt to resolve the problem of maintaining the thread integrity of the tubular, Besco utilized a specialized hydraulic swivel that allowed the entire Tesco elevator, as well as any tubular gripped therein, to fully rotate. Besco says that the solution was not optimum because the lines supporting the swivel and the elevator had a tendency to wrap and tangle. As a result, Besco claims that its operations manager, Jamie Lovell, conceived of a solution to permit the tubular to spin inside of the Tesco elevator by installing rollers into the die insert.
While Plaintiffs admit that Cajun created drawings and fabricated components of the roller inserts customized for Besco's BATT System and the Tesco elevators, Plaintiffs deny that Lovell was the inventor of the disputed roller inserts. Rather, Plaintiffs contend that Shane and Heath Triche, brothers and managers of Cajun, had conceived of the ERIS system by the end of September 2014 after Lovell introduced and discussed the problem with them.
Despite the apparent lack of communication, Plaintiffs contend that Lovell reached out to Cajun about renting the ERIS tool,
For the first two projects, Besco paid the invoices in full. Beginning in September of 2015, Besco began to request that Cajun remove charges for certain rental days. Besco claims that it only agreed to pay Cajun for whatever amounts it received from Anadarko. Due to an economic down turn in the oil-and-gas industry, Besco permitted Anadarko to receive price concessions, and, in turn, asked Cajun for the same.
With Besco's fifth rental project, Cajun says it began to require that Besco signify its assent to the Rental Agreement via signature. In addition to the disclaimer, the following statement appeared above the signature line of each quote: "THIS IS A QUOTATION ON THE GOODS NAMED, SUBJECT TO THE TERMS AND CONDITIONS ATTACHED."
Meanwhile, sometime around February 2016, Lovell contacted Jerod Deroche of Elite Energy Services, LLC ("Elite") to design an elevator roller insert system for Besco.
Using Elite's prototypes, Besco created its own ERIS system (what Cajun refers to as the "Accused First Design Products"), which Cajun contends literally infringe its patent. In response to Cajun's expressed intent to file a motion for preliminary injunction, Besco agreed not to use the Accused First Design Products until the litigation resolves. Cajun accordingly stipulated not to seek a preliminary injunction to prevent Besco from using the Accused First Design Products.
Cajun seeks injunctive relief to stop Besco from using its alternative designs; a declaratory judgment that it owns the ERIS and that Besco assign to it all right, title, and interest to all improvements and modifications made to the ERIS, as well as any information conceived of and/or reduced to practice that in any way relates to the ERIS; a declaratory judgment that Besco infringed the '862 Patent; and damages for (1) willful infringement of the '862 Patent; (2) willful and malicious violation of the DTSA; (3) violation of the LUTSA; (4) violation of the LUTPA; (5) bad faith breach of contract; and (6) fraud. Plaintiffs join Cajun's claims under the DTSA and LUTSA.
Besco seeks to dismiss Plaintiffs' first amended complaint in the Cajun II Lawsuit through a series of motions for partial summary judgment. First, Besco contends that it did not breach the disputed terms and conditions of the Rental Agreement because the Rental Agreement is not a valid and enforceable contract. Besco says that Benton and the Triches had an oral agreement that Besco would pay Cajun amounts received from Besco's customer, Anadarko. Although Cajun claims that Besco later agreed to be bound by written terms and conditions listed on Cajun's website and attached to quotes and delivery tickets signed by Besco's employees, Besco maintains that these terms and conditions differed from the original, oral contract. Therefore, Besco argues that any presentation of the Rental Agreement constituted counter-offers that Besco's low-level employees had no authority to accept on behalf of Besco; and that Cajun attempted to "dupe" Besco into agreeing to these terms and conditions by not bringing them to the attention of Benton — who Cajun knew to be the Besco representative with authority to bind Besco, having previously contacted him about the licensing agreement. Besco asserts it would have never agreed to be bound by the modified terms and conditions because they reflected an unprofitable price structure.
Second, Besco contends that Plaintiffs cannot establish the existence of any trade secrets under the DTSA and LUTSA because the incorporation of a friction-reducing device in this lifting equipment is "generally known" and "readily ascertainable" by third parties who observed the ERIS in testing, use, and transportation.
Third, Besco seeks to dismiss Cajun's claims based on patent infringement. Besco argues that Cajun cannot assert a claim of literal infringement against the Accused Second Design Products because Besco's alternative design employs a single set of upper rollers and lower "filler" pads rather than the plurality of lower or second rollers claimed in each of the four independent claims of the '862 Patent.
In opposition to the motion for partial summary judgment on the contract claim, Cajun responds that genuine issues of material fact exist regarding whether Besco accepted the terms of the Rental Agreement by performing in compliance with the quotes and referenced or attached Rental Agreement. Cajun argues that the Rental Agreement was available on Cajun's website throughout the entirety of its relationship with Besco. Further, Cajun says that it directed Besco to the terms of the Rental Agreement when Cajun issued the second quote in July 2015. Because Besco rented the equipment in compliance with the terms and conditions of the Rental Agreement for the first four months of its rental relationship with Cajun, during which period Besco paid the invoices in full, Cajun contends that Besco accepted those terms and conditions by performance.
In opposition to Besco's motion for partial summary judgment on Plaintiffs' trade-secrets claims, Plaintiffs argue that the technology embodied in the '862 Patent is not generally known, as acknowledged by Besco's expert, who had stated that he was unaware of any commercial tool that does what Plaintiffs' ERIS tool does except for Besco's "knock-offs."
In opposition to Besco's motion for partial summary judgment on Cajun's patentinfringement claims, Cajun responds that it only asserts literal infringement against the Accused First Design Products, not the Accused Second Design Products. Because Besco only challenges a claim for literal infringement of the Accused Second Design Products, Cajun argues that its claim of literal infringement is left intact as unaddressed.
Besco's replies in support of its motions directed to the breach-of-contract claim and tradesecrets claims largely repeat arguments made in its original memoranda.
Summary judgment is proper "if the pleadings, depositions, answers to interrogatories, and admissions on file, together with the affidavits, if any, show that there is no genuine issue as to any material fact and that the moving party is entitled to a judgment as a matter of law." Celotex Corp. v. Catrett, 477 U.S. 317, 322 (1986) (citing Fed. R. Civ. P. 56(c)). "Rule 56(c) mandates the entry of summary judgment, after adequate time for discovery and upon motion, against a party who fails to make a showing sufficient to establish the existence of an element essential to that party's case, and on which the party will bear the burden of proof at trial." Id. A party moving for summary judgment bears the initial burden of demonstrating the basis for summary judgment and identifying those portions of the record, discovery, and any affidavits supporting the conclusion that there is no genuine issue of material fact. Id. at 323. If the moving party meets that burden, then the nonmoving party must use evidence cognizable under Rule 56 to demonstrate the existence of a genuine issue of material fact. Id. at 324.
A genuine issue of material fact exists if a reasonable jury could return a verdict for the nonmoving party. See Anderson v. Liberty Lobby, Inc., 477 U.S. 242, 248 (1996). The substantive law identifies which facts are material. Id. Material facts are not genuinely disputed when a rational trier of fact could not find for the nonmoving party upon a review of the record taken as a whole. See Matsushita Elec. Indus. Co., Ltd. v. Zenith Radio Corp., 475 U.S. 574, 587 (1986); Equal Emp't Opportunity Comm'n v. Simbaki, Ltd., 767 F.3d 475, 481 (5th Cir. 2014). "[U]nsubstantiated assertions," "conclusory allegations," and merely colorable factual bases are insufficient to defeat a motion for summary judgment. See Anderson, 477 U.S. at 249-50; Hopper v. Frank, 16 F.3d 92, 97 (5th Cir. 1994). In ruling on a summary judgment motion, a court may not resolve credibility issues or weigh evidence. See Delta & Pine Land Co. v. Nationwide Agribusiness Ins. Co., 530 F.3d 395, 398-99 (5th Cir. 2008). Furthermore, a court must assess the evidence, review the facts, and draw any appropriate inferences based on the evidence in the light most favorable to the party opposing summary judgment. See Tolan v. Cotton, 572 U.S. 650, 656 (2014); Daniels v. City of Arlington, 246 F.3d 500, 502 (5th Cir. 2001). Yet, a court only draws reasonable inferences in favor of the nonmovant "when there is an actual controversy, that is, when both parties have submitted evidence of contradictory facts." Little v. Liquid Air Corp., 37 F.3d 1069, 1075 (5th Cir. 1994) (en banc) (citing Lujan v. Nat'l Wildlife Fed'n, 497 U.S. 871, 888 (1990)).
After the movant demonstrates the absence of a genuine dispute, the nonmovant must articulate specific facts and point to supporting, competent evidence that may be presented in a form admissible at trial. See Lynch Props., Inc. v. Potomac Ins. Co. of Ill., 140 F.3d 622, 625 (5th Cir. 1998); Fed. R. Civ. P. 56(c)(1)(A) & (c)(2). Such facts must create more than "some metaphysical doubt as to the material facts." Matsushita, 475 U.S. at 586. When the nonmovant will bear the burden of proof at trial on the dispositive issue, the moving party may simply point to insufficient admissible evidence to establish an essential element of the nonmovant's claim in order to satisfy its summary judgment burden. See Celotex, 477 U.S. at 322-25; Fed. R. Civ. P. 56(c)(B). Unless there is a genuine issue for trial that could support a judgment in favor of the nonmovant, summary judgment must be granted. See Little, 37 F.3d at 1075-76.
"A contract is an agreement by two or more parties whereby obligations are created, modified, or extinguished." La. Civ. Code art. 1906. Under Louisiana law, the formation of a valid contract requires: (1) capacity to contract; (2) mutual consent; (3) a certain object; and (4) a lawful cause. Id. arts. 1918, 1927, 1966 and 1971. "The burden of proof in an action for breach of contract is on the party claiming rights under the contract." Rebouche v. Harvey, 805 So.2d 332, 334 (La. App. 2001). "The existence of the contract and its terms must be proved by a preponderance of the evidence." Id. Moreover, "[t]he existence or nonexistence of a contract is a question of fact and, accordingly, the determination of the existence of a contract is a finding of fact." Sam Staub Enters., Inc. v. Chapital, 88 So.3d 690, 963 (La. App. 2012).
The parties offer competing versions of the existence and terms of their contractual relationship. Besco generally contends that an earlier oral agreement governed the relationship, but is rather short on details about its terms and how it came into existence. On the other hand, Cajun insists that the contractual relationship was governed by the terms of its Rental Agreement to which Besco consented at various times and in various ways. For instance, as early as October 5, 2015, Cajun emailed Lovell, Besco's operations manager, a quote including the terms and conditions of the Rental Agreement with a disclaimer that read, "NON-R[E]FUTAL OF THIS QUOTATION CONSTITUTES ACCEPTANCE OF QUOTATION AND ALL TERMS AND CONDITIONS THER[E]TO," and Besco subsequently rented the ERIS tool for a total of 202 days.
DTSA and LUTSA are substantially similar. To prevail on a DTSA claim, a plaintiff must prove: (1) the existence of a trade secret; (2) the misappropriation of the trade secret by another; and (3) the trade secret's relation to a good or service used or intended for use in interstate or foreign commerce. 18 U.S.C. § 1836(b)(1). LUTSA provides for restraining the "actual or threatened misappropriation" of trade secrets. La. R.S. 51:1432(A) & 1438-39. The statute also permits a complainant to recover damages, in addition to or in lieu of injunctive relief, for the actual loss caused by the misappropriation of trade secrets. Id. 51:1433. To prevail on a LUTSA claim, "`a complainant must prove (a) the existence of a trade secret, (b) a misappropriation of the trade secret by another, and (c) the actual loss caused by the misappropriation.'" Computer Mgmt. Assistance Co. v. Robert F. DeCastro, Inc., 220 F.3d 396, 403 (5th Cir. 2000) (quoting Reingold v. Swiftships, Inc., 126 F.3d 645, 648 (5th Cir. 1997)).
DTSA defines "trade secret" as:
18 U.S.C. § 1839(3). LUTSA's definition of "trade secret" is nearly identical.
The "trade secrets" that Plaintiffs allege Besco misappropriated include "confidential and proprietary information, including business, scientific, engineering, and technical information such as designs, methods, techniques, processes, procedures, prototypes, tools, and schematics."
"A trade secret `is one of the most elusive and difficult concepts in the law to define.'" Tewari De-Ox Sys., Inc. v. Mountain States/Rosen, L.L.C., 637 F.3d 604, 613 (5th Cir. 2011) (quoting Lear Siegler, Inc. v. Ark-Ell Springs, Inc., 569 F.2d 286, 288 (5th Cir. 1978)). "Whether something is a trade secret is a question of fact." CheckPoint Fluidic Sys. Int'l, Ltd. v. Guccione, 888 F.Supp.2d 780, 796 (E.D. La. 2012) (citations omitted). "[T]he question of whether certain information constitutes a trade secret ordinarily is best `resolved by a fact finder after full presentation of evidence from each side.'" Tewari De-Ox Sys., 637 F.3d at 613 (quoting Lear Siegler, 569 F.2d at 289). "`The efforts required to maintain secrecy are those reasonable under the circumstances, and courts do not require extreme and unduly expensive procedures to be taken to protect trade secrets.'" CheckPoint Fluidic Sys. Int'l, 888 F. Supp. 2d at 796-97 (quoting Sheets v. Yamaha Motors Corp., U.S.A., 849 F.2d 179, 183 (5th Cir. 1988)).
DTSA defines "misappropriation" as:
18 U.S.C. § 1839(5). LUTSA's definition of "misappropriation" is nearly identical.
There are questions of material fact regarding whether the information Besco acquired constitutes trade secrets, and how Besco acquired it, that preclude summary judgment as to whether Besco misappropriated the alleged trade secrets. For example, the existence of a contract that restricts Besco's use of the ERIS tool is itself disputed. It is for the jury, then, to determine the nature of the contract and whether Plaintiffs' allegedly confidential and proprietary information constitutes a "trade secret." While Besco denies having reverse engineered the ERIS tool, it also asserts that reverse engineering is permissible under the DTSA. Besco further contends that it could not have misappropriated its own idea, claiming Lovell to be the true inventor.
Regardless, Besco next contends that the alleged trade secrets were lost upon publication of T2 Tool's patent application on September 26, 2016. But publication of the '862 Patent application does not deprive Plaintiffs of a cause of action for misappropriation of trade secrets before the patent application was published.
Finally, Besco posits that Cajun never actually owned the purported trade secrets because T2 Tools and/or the Triches were the true owners, whose rights were lost upon publication of the patent, and any purported transfer of trade-secrets rights thereafter would be ineffective. And, because Besco never contracted with T2 Tools or the Triches, Besco asserts that these parties are improper plaintiffs. Plaintiffs submit that Besco's lack of a contractual relationship with T2 Tools and the Triches is immaterial to the trade-secrets claims. Plaintiffs further argue that T2 Tools and the Triches validly assigned their rights to the trade secrets to Cajun, and that Besco had full knowledge that T2 Tools, the Triches, and Cajun were the owners. In urging the dismissal of the Cajun I Lawsuit, Besco argued that Cajun lacked standing to bring trade-secrets claims because it did not own any trade secrets. Plaintiffs filed the Cajun II Lawsuit adding T2 Tools and the Triches as trade-secrets claimants. As with regard to the existence of the alleged trade secrets, material facts relating to ownership of the alleged trade secrets and the contractual or confidential relationship between Besco and the Plaintiffs are genuinely disputed. In view of these numerous disputed issues of material fact, Besco's motion for partial summary judgment is denied as to Plaintiffs' DTSA and LUTSA claims.
LUTPA provides a civil cause of action to recover actual damages to "[a]ny person who suffers any ascertainable loss of money or movable property ... as a result of the use or employment by another person of an unfair or deceptive method, act, or practice declared unlawful by R.S. 51:1405." La. R.S. 51:1409. Section 51:1405(A) declares unlawful "[u]nfair methods of competition and unfair or deceptive acts or practices in the conduct of any trade or commerce." Courts determine "on a case-by-case basis" what conduct constitutes an "unfair trade practice" and "have repeatedly held that, under this statute, the plaintiff must show the alleged conduct offends established public policy and is immoral, unethical, oppressive, unscrupulous, or substantially injurious." Cheramie Servs., Inc. v. Shell Deepwater Prod., Inc., 35 So.3d 1053, 1059 (La. 2010) (quotation and citations omitted). A trade practice that amounts to fraud, deceit, or misrepresentation is "deceptive" for purposes of LUTPA. Total Safety v. Rowland, 2014 WL 6485641, at *4 (E.D. La. Nov. 18, 2014) (citations omitted).
Because Besco's argument for dismissal of Cajun's LUTPA claim depends upon dismissal of the DTSA and LUTSA claims, and those claims survive, Besco's motion for partial summary judgment of the LUTPA claim must also be denied. And, as Cajun notes, Besco did not move to dismiss Cajun's fraud claim, the allegations of which satisfy the elements for actionable conduct under LUTPA. Thus, Besco's motion as to the LUTPA claim must be denied for this additional reason.
Under 35 U.S.C. § 271(a), "whoever without authority makes, uses, or sells any patented invention, within the United States or imports into the United States any patented invention during the term of the patent therefor, infringes the patent." Active inducement of direct infringement is prohibited under 35 U.S.C. § 271(b), which requires the defendant to have knowledge of a patent and that the acts of inducement were infringing. Warsaw Orthopedic, Inc. v. NuVasive, Inc., 824 F.3d 1344, 1347 (Fed. Cir. 2016). Contributory infringement is prohibited under 35 U.S.C. § 271(c), which states:
Willful blindness can satisfy the knowledge requirement for active inducement and for contributory infringement. Warsaw Orthopedic, Inc., 824 F.3d at 1347 (citing Commil USA, LLC v. Cisco Sys., Inc., 575 U.S. ____, 135 S.Ct. 1920 (2015), and Global-Tech Appliances, Inc. v. SEB S.A., 563 U.S. 754, 766 (2011)).
According to Plaintiffs' opposition, Plaintiffs maintain a claim of literal infringement against only the Accused First Design Products. Besco's first contention for non-infringement is that it never used these products after the patent issued, submitting the affidavit of Benton, which states in part: "Besco has never used the [ERIS] roller inserts having lower or second rollers on or after June 5, 2018, the issue date of the U.S. Patent No. 9,988,862."
Under the doctrine of equivalents, "a product or process that does not literally infringe upon the express terms of a patent claim may nonetheless be found to infringe if there is `equivalence' between the elements of the accused product or process and the claimed elements of the patented invention." Warner-Jenkinson Co. v. Hilton Davis Chem. Co., 520 U.S. 17, 21 (1997) (citing Graver Tank & Mfg. Co. v. Linde Air Prods. Co., 339 U.S. 605, 609 (1950)). Equivalence is found under the "insubstantial differences test" where the accused device contains "`an insubstantial change which adds nothing of significance to the structure, material[,] or acts disclosed in the' relevant patent," Tomita Tech. USA, LLC v. Nintendo Co., 681 F. App'x 967, 972 (Fed. Cir. 2017) (quoting Valmont Indus., Inc. v. Reinke Mfg. Co., 983 F.2d 1039, 1043 (Fed. Cir. 1993)); or under the "function-way-result" test where the accused device "performs substantially the same function in substantially the same way to obtain the same result" as the patented invention. Graver Tank, 339 U.S. at 608 (quotation omitted).
As in claims of literal infringement, the "all limitations" rule applies to claims of infringement under the doctrine of equivalents. See, e.g., Warner-Jenkinson, 520 U.S. at 29 ("Each element contained in a patent claim is deemed material to defining the scope of the patented invention, and thus the doctrine of equivalents must be applied to individual elements of the claim, not to the invention as a whole."); Kustom Signals, Inc. v. Applied Concepts, Inc., 264 F.3d 1326, 1333 (Fed. Cir. 2001) ("No claimed element, or an equivalent thereof, can be absent if the doctrine of equivalents is invoked."). The "all limitations" rule "holds that an accused product or process is not infringing unless it contains each limitation of the claim, either literally or by an equivalent." Freedman Seating Co. v. Am. Seating Co., 420 F.3d 1350, 1358 (Fed. Cir. 2005). The two main tenets of the "all limitations" rule when applied to the doctrine of equivalents are (1) to assess equivalence "on a limitation-by-limitation basis, as opposed to from the perspective of the invention as a whole," and (2) to preclude a finding that an element is an equivalent "if such a finding would entirely vitiate the limitation." Id. (citations omitted). "[S]aying that a claim element would be vitiated is akin to saying that there is no equivalent to the claim element in the accused device based on the well-established `function-way-result' or `insubstantial differences' tests." Brilliant Instruments, Inc. v. GuideTech, LLC, 707 F.3d 1342, 1347 (Fed. Cir. 2013). "There is no set formula for determining whether a finding of equivalence would vitiate a claim limitation, and thereby violate the all limitations rule. Rather, courts must consider the totality of the circumstances of each case and determine whether the alleged equivalent can be fairly characterized as an insubstantial change from the claimed subject matter without rendering the pertinent limitation meaningless." Freedman Seating Co., 420 F.3d at 1358 (citations omitted); see also Graver Tank, 339 U.S. at 856-57 ("What constitutes equivalency must be determined against the context of the patent, the prior art, and the particular circumstances of the case.").
Ultimately, "[a] finding of equivalence is a determination of fact." Graver Tank, 339 U.S. at 857. Accordingly, "[w]hether the substitute element (1) has substantially the same function as the recited element, (2) achieves that function in substantially the same way, and (3) achieves substantially the same result are questions of fact." Charles Mach. Works, Inc. v. Vermeer Mfg. Co., 723 F.3d 1376, 1380 (Fed. Cir. 2013) (citations omitted). A court, therefore, cautiously approaches a motion for summary judgment of infringement with "a care proportioned to the likelihood of its being inappropriate." SRI Int'l v. Matsushita Elec. Corp. of Am., 775 F.2d 1107, 1116 (Fed. Cir. 1985). In contrast to the factual question of infringement, the doctrine of "[v]itiation is `a legal determination that "the evidence is such that no reasonable jury could determine two elements to be equivalent."'" Charles Mach. Works, Inc., 723 F.3d at 1380 (quoting Deere & Co. v. Bush Hog, LLC, 703 F.3d 1349, 1356 (Fed. Cir. 2012), and Warner-Jenkinson, 520 U.S. at 39 n.8). The patentee bears the burden of raising a "genuine factual issue that the accused device, while literally omitting a claim element, nonetheless incorporates an equivalent structure." See Deere, 703 F.3d at 1357; see also Tex. Instruments, Inc. v. Cypress Semiconductor Corp., 90 F.3d 1558, 1566 (Fed. Cir. 1996) (equivalency must be proven "on a limitation-bylimitation basis" and with "particularized testimony and linking argument").
Dependent claims contain every limitation of the claims from which they depend. Therefore, it is "axiomatic that dependent claims cannot be found infringed unless the claims from which they depend have been found to have been infringed." Wolverine World Wide, Inc. v. Nike, Inc., 38 F.3d 1192, 1199 (Fed. Cir. 1994) (quoting Wahpeton Canvas Co. v. Frontier, Inc., 870 F.2d 1546, 1553 (Fed. Cir. 1989)). As a matter of law, if an accused product does not infringe an independent claim, then it necessarily does not infringe any claim dependent on that independent claim. See id. It is undisputed that each of the independent claims (Claims 1, 9, 19, and 26) recites a plurality of lower or second rollers. Besco argues that its Accused Second Design Products do not infringe the '862 Patent, then, because its filler pads are not equivalents to the lower or second rollers.
Cajun argues that the filler pads perform the same function of reducing friction between the tubular and the elevator insert to achieve the same result as the lower rollers of allowing free rotation of the tubular within the elevator insert. In arguing that the filler pads have the effect of preventing the tubular from damaging the elevator insert in the event of "inadvertent contact," Besco effectively concedes that the filler pads serve to achieve the same result as the lower rollers — free rotation of the tubular. As to function, however, Besco asserts that there exists a substantial difference between its filler pads and Cajun's lower rollers: the lower rollers, unlike the filler pads, function to "hold" the tubular centrally in the elevator insert by means of a different degree of contact.
Reading this excerpt in context with the patent claims and specification as a whole, the Court disagrees with Besco's position. A reasonable jury could find that the lower rollers function in the same way as the filler pads — that is, to allow contact that facilitates free rotation of the tubular — and no more. It is essential to Besco's argument that the word "hold," as used in the '862 Patent, be read as requiring the "constant contact" the Court rejected in its claim construction as being necessary to the meaning of the disputed terms. As the Court noted in its construction of the term "contact," neither the claims nor the specification indicates that the lower rollers are in "constant contact" with the tubular in order to perform the function of facilitating its free rotation within the elevator insert.
Accordingly, for the foregoing reasons,
IT IS ORDERED that Besco's motions for partial summary judgment to dismiss Cajun's breach-of-contract claim (R. Doc. 218), to dismiss Plaintiffs' trade-secrets claims (R. Doc. 216), and to dismiss Cajun's patent-infringement claim (R. Doc. 219) are DENIED.
La. R.S. 51:1431(4).
La. R.S. 51:1431(2).
